Negative statements in patent applications
A recent decision of Germany’s Federal Supreme Court in Fischdosendeckel (Fish Tin Cap) concerns the somewhat strange case of negative statements about a competitor’s products in the specification of a patent.
It is, of course, common to describe the prior art and its downsides and disadvantages in the specification of a patent. This is one of the indispensable elements of a patent specification, because the technical problem and its solution may not be described and disclosed with the required clarity if the disadvantages of the prior art are not expressly mentioned.
The prior art does not only consist of prior patent documents, but also of products that were published and put on the market before the patent filing. It is therefore not unusual for a competitor’s product to be mentioned in a patent specification. Negative statements about its functions and/or constructive details are also common.
The facts of the Fischdosendeckel decision concerned several such statements that a competitor of the applicant criticised as amounting to unfair competition. This plaintiff sued the patent applicant for injunctive relief and deletion of the respective passages in the patent specification. The Dresden Court of Appeal granted these claims.
Upon revision, the Federal Supreme Court reversed the decision of the Court of Appeal. It held that such an action was not admissible.
The court referred to a line of decisions that held that injunctive relief against negative statements made in the course of court or administrative proceedings could not be granted for want of a need for legal relief, since these statements and their ‘treatment’ should be left to the courts and bodies concerned with the proceedings in which these statements were originally made.
The court therefore recognised a legitimate interest to make statements in the course of an argument for defensive purposes, in court or administrative proceedings, without the risk that an opponent could attempt to prevent such statements by claiming unfair competition or infringement of personal rights.
"Parties must, at least in principle, be able to defend themselves, or assert claims, as they see fit, without a risk that statements made during proceedings could be attacked in separate proceedings."
These basic rules were also confirmed in the context of negative statements contained in patent specifications. The German Patent Act contains provisions for the circumstances in which parts of the patent specification can be rectified or deleted.
A patent application, whether German or European, sets in motion a special administrative proceeding in which the patentability of the patent is examined. Third parties may interfere in some respects at this stage, but they do not have the right to challenge decisions or certain statements in the application.
The Patent Act further provides for third parties to file an opposition within a certain time after publication of the granted patent. The Patent Act also outlines the grounds on which a nullity action against the patent can be based.
The court therefore held that the provisions for examination, opposition and nullity proceedings in the Patent Act are exhaustive. These provisions deal with the procedural possibilities of a third party to challenge a granted patent.
Therefore, there was no legitimate need for injunctive relief with regard to negative statements closely connected to the invention, as thirdparty concerns may only be raised in the proceedings provided for in the Patent Act.
The court expressly left open whether an exception to this rule would be appropriate in cases where negative statements did not have a connection to the invention described in the patent specification, as the facts of the case did not raise this problem.
This case sheds some further light on the relationship between unfair competition claims against statements and the procedural possibilities of the parties in court or administrative proceedings.
The court did not challenge the long-standing rule that parties must, at least in principle, be able to defend themselves, or assert claims, as they see fit, and use appropriate means to achieve the desired procedural result without a risk that statements made during these proceedings could be attacked in separate proceedings on unfair competition grounds or for infringement of personal rights.
However, the court did not rule out that a third party may seek injunctive relief against libellous statements if these statements do not have a connection to the invention.
Jens Künzel LLM is a partner at Krieger Mes & Graf v. der Groeben. He can be contacted at: jens.kuenzel@krieger-mes.de
